IP Expert Comments On A ‘Special’ Trademark Battle
Jose Mourinho, the self-entitled ‘Special One’ has been named as Louis Van Gaal’s replacement as the new manager of Manchester United FC, despite an unexpected stumbling block arising.
Chelsea FC own the trademark rights to Jose Mourinho’s name and his autograph, a stylised signature of 'Mourinho'.
What does this mean for Manchester United FC?
Chelsea FC registered ‘Jose Mourinho’ and his stylised autograph, ‘Mourinho’ as European trademarks ('Chelsea’s EUTMs') in 2005 and 2006 respectively. This means Chelsea FC have exclusive rights to sell any of the goods listed in each of the specifications of Chelsea’s EUTM, with 'Jose Mourinho' and the 'Mourinho' signature. So this means, at present Chelsea FC have exclusive rights to sell goods with 'Jose Mourinho' and the 'Mourinho' signature on sports clothing, footwear, key rings and toiletries, to name a few.
In a nutshell, Manchester United would be infringing Chelsea FC’s EUTMs, if it uses Chelsea’s EUTMs to sell any of the items set out in the specifications without Chelsea FC’s consent. If Manchester United FC wants to do this, it has the following options:
(i) Agree a trademark licensing arrangement with Chelsea FC which would involve paying a licence fee to use their EUTMs;
(ii) Pay Chelsea FC to assign their EUTMs to Manchester United FC so they become the new owners of the Chelsea EUTMs;
(iii) Apply to invalidate the Chelsea EUTMs, on one of the grounds in accordance with the Community Trade Mark Regulation (EU) 2015/2424.
As this would impact on the potential money both the club and the incoming manager can make, and given the parties involved, it has highlighted the importance and value in trade mark registration and in particular, in acknowledging ownership of trade marks and IP rights more generally and at the earliest stage when negotiating an employment contract.
Amy Au, an intellectual property specialist at Irwin Mitchell believes the current issues highlight the importance, value and power of a strong trademark.
“The dispute between Chelsea FC and Manchester United FC should highlight the importance of ownership of trade marks and IP rights more generally. This is a great example of how powerful a trade mark can be and businesses, with some foresight, should identify potentially valuable brands and apply to register trade marks for them as soon as possible.”
“When negotiating an employment contract and/or reviewing terms, always consider IP provisions and whether the employee/employer owns any IP rights that could cause problems for either party in the future.
“Third party ownership of players has already been banned from FIFA, due to the complications it brings and the fact it creates conflicts of interest, we wonder if football managers and/or players alike we become more IP savvy and will ensure that they own trade marks for their names."
Amy Au - Associate